Metro-Goldwyn-Mayer Studios Inc. v.
Claim Number: FA0709001073020
Complainant is Metro-Goldwyn-Mayer Studios Inc. (“Complainant”), represented by Nathan
J. Hole, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rockybalboa.com>, registered with Domainideas.ca Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On September 4, 2007, Domainideas.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <rockybalboa.com> domain name is registered with Domainideas.ca Inc. and that Respondent is the current registrant of the name. Domainideas.ca Inc. has verified that Respondent is bound by the Domainideas.ca Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@rockybalboa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a worldwide producer and distributor of entertainment products, including motion pictures, television programming, home video, music, licensed merchandise, and numerous other products.
Complainant produced and released the first “Rocky” film in 1976, which enjoyed immense popularity and won the Academy Award for Best Picture in 1977.
Complainant subsequently released five more “Rocky” films, culminating with the release of the film “Rocky Balboa” in 2006.
“Rocky Balboa” was also very successful, grossing more than $155 million worldwide.
Complainant has spent considerable amounts of time and money promoting all of the “Rocky” films and related goods and services under the ROCKY mark.
Complainant owns a trademark and service mark registration for the ROCKY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,647,246, issued June 11, 1991) and also has a pending trademark application with the USPTO for the ROCKY BALBOA mark (Serial No. 78/957,012, filed August 21, 2006).
Complainant has not licensed or authorized Respondent to use the ROCKY mark for any purpose.
Respondent registered the <rockybalboa.com> domain name on January 26, 2007.
Respondent’s disputed domain name resolves to a website that uses Complainant’s ROCKY mark and features links to third-party websites that offer “Rocky” and Rocky Balboa” related DVDs, ringtones, memorabilia, and other merchandise in direct competition with the business of Complainant.
Respondent’s <rockybalboa.com> domain name is confusingly similar to Complainant’s ROCKY mark.
Respondent does not have any rights or legitimate interests in the <rockybalboa.com> domain name.
Respondent registered and uses the <rockybalboa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the ROCKY trademark and service mark through its registration of the mark with the USPTO. This sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Respondent’s <rockybalboa.com> domain name is confusingly similar to Complainant’s ROCKY mark under Policy ¶ 4(a)(i), inasmuch as it merely adds the term “balboa” onto the end of the mark. Because “Rocky Balboa” is the title of one of Complainant’s famous films, the term “balboa” is merely descriptive of Complainant’s business and does not distinguish the disputed domain name from the ROCKY mark. In addition, the inclusion of the generic top-level domain “.com” is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com”, does not affect the domain for purposes of determining whether it is identical or confusingly similar); further see Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of
domain name
registrants . . . .
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to prove that Respondent lacks rights and legitimate interests in the <rockybalboa.com> domain name. Once Complainant makes out a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).
In the case before us, Complainant has established a prima facie case under the Policy.
And because of Respondent’s failure to answer the Complaint, we are entitled to presume that Respondent does not have rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given
Respondent’s failure to submit a substantive answer in a timely fashion, the
Panel accepts as true all of the allegations of the complaint.
However, we will nonetheless examine the evidence of record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in its domain name pursuant to Policy ¶ 4(c).
In this connection, we first observe that Complainant asserts that Respondent is not commonly known by the <rockybalboa.com> domain name, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). Respondent does not deny this assertion. Moreover, Respondent’s WHOIS information indicates that Respondent is “Antigua Domains,” and there is nothing else in the record to suggest that Respondent is known by the disputed domain name. Moreover, Respondent does not deny Complainant’s allegation that Complainant has not licensed or authorized Respondent to use the ROCKY mark for any purpose. Thus, we conclude that Respondent lacks rights and legitimate interests in the <rockybalboa.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use the trademarked name).
We next note that there is no dispute that Respondent’s
disputed domain name resolves to a website displaying links to third party
websites in direct competition with the business of Complainant. And we presume
from this that Respondent earns click-through fees when Internet users click on
these links. Such use also indicates
Respondent’s lack of rights and legitimate interests in the <rockybalboa.com> domain name, as
it does not constitute either a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002):
“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already determined that Respondent benefits commercially when Internet users, presumably seeking Complainant’s goods and services, click on the links contained on the website that resolves from the <rockybalboa.com> domain name. Respondent is thus capitalizing on the likelihood that users will be confused as to Complainant’s possible affiliation with the disputed domain name and corresponding website. This is evidence that Respondent registered and is using the <rockybalboa.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that a respondent registered the domain name <statefarmnews.com> in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without permission from that complainant).
In addition, it appears that Respondent registered the <rockybalboa.com> domain name
with at least constructive knowledge of Complainant’s rights in the ROCKY trademark
and service mark by virtue of Complainant’s prior registration of that mark
with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <rockybalboa.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 17, 2007
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